Apple Inc v. Smith Interface Technologies LLC

1. Case Identification

• Case #: IPR2024-01087
• Patent #: 10,656,755
• Filed: June 27, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Michael S. Smith
• Challenged Claims: 1-13, 15-35, 37-43

2. Patent Overview

• Title: Gesture-Equipped Touch Screen System, Method, and Computer Program Product
• Brief Description: The ’755 patent discloses systems and methods for an electronic device with a touch screen to dynamically change the appearance of a background in response to a user's touch input, while the appearance of foreground objects remains unchanged.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Hackborn and Westerman - Claims 1-3, 7, 10-11, 13, 15, 17, 20, 22-25, 29, 32-33, 35, 37-38, and 41-42 are obvious over Hackborn in view of Westerman.

• Prior Art Relied Upon: Hackborn (Application # 2011/0119610) and Westerman (Application # 2008/0316183).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hackborn discloses a mobile device with a touch screen featuring a "live wallpaper" background (e.g., animated grass) and distinct foreground objects (e.g., icons). Hackborn teaches that this live wallpaper changes its appearance in response to a user's swipe gesture on the background, while the foreground objects on a separate visual layer remain static. Petitioner asserted that while Hackborn describes receiving both "tap" and "swipe" inputs, it lacks detail on distinguishing between them. Westerman was argued to supply this teaching by disclosing methods to differentiate gestures by comparing the magnitude of a touch input (e.g., displacement, velocity) against a predetermined threshold.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) implementing Hackborn's system, which inherently must distinguish between input types, would combine it with Westerman's well-known gesture recognition techniques to provide a clear and reliable method for differentiating taps from swipes.
  • Expectation of Success: Petitioner contended that a POSITA would have a high expectation of success because both references operate in the same field of touch-sensitive user interfaces, and applying Westerman's gesture analysis to Hackborn's system is a predictable implementation of known functions.

Ground 1B: Obviousness over Hackborn, Westerman, and Townsend - Claims 4-5, 8-9, 21, 26-27, 30-31, and 43 are obvious over the combination for Ground 1A in view of Townsend.

• Prior Art Relied Upon: Hackborn, Westerman, and Townsend (Application # 2010/0103118).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Hackborn-Westerman combination by adding Townsend. Petitioner argued Townsend teaches a physics-based simulation engine and API that provides realistic movement for on-screen objects, including inertia and deceleration after a user's touch ceases. This addresses claim limitations related to the dynamic change decaying after the first contact ends. For example, the animation of grass swaying in Hackborn would, when combined with Townsend's physics engine, realistically slow down and stop (decay) due to simulated friction after the user's swipe is completed.
  • Motivation to Combine: A POSITA seeking to enhance the realism of Hackborn's live wallpaper animation would be motivated to incorporate the physics-based simulation techniques taught by Townsend. This would improve the user experience by making the animated background behave in a more intuitive, real-world manner.
  • Expectation of Success: Using simulation engines to create realistic graphics was a well-known technique. A POSITA would reasonably expect that applying Townsend's physics engine to animate Hackborn's wallpaper would be successful and produce predictable, more realistic visual effects.

Ground 2: Obviousness over Hackborn, Westerman, and Jobs - Claims 1, 4-8, 10-12, 15, 17-20, 22-23, 26-30, 32, 34, and 37-42 are obvious over Hackborn in view of Westerman and Jobs.

• Prior Art Relied Upon: Hackborn, Westerman, and Jobs (Application # 2008/0122796).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground uses an alternative embodiment from Hackborn—a live wallpaper displaying a list of social media posts that automatically scrolls as new posts are received. Petitioner argued that Jobs teaches manual, friction-based scrolling of lists (e.g., messages) in response to swipe gestures. The combination, therefore, discloses a live wallpaper of scrolling images that a user can manually scroll through with a swipe gesture, with the scrolling speed corresponding to the finger movement and exhibiting inertia.
  • Motivation to Combine: A POSITA would combine these references to add a conventional and intuitive manual scrolling feature to Hackborn's auto-updating social media feed. This allows a user to review older posts that may have scrolled out of view, a predictable and desirable improvement to the user interface.
  • Expectation of Success: Petitioner asserted that combining manual swipe-to-scroll functionality (Jobs) with a list-based display (Hackborn) on a touchscreen device (all three references) was a well-understood and routine design choice with a high likelihood of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including a combination with Jablonski (Patent 6,920,606) for teaching pre-installed user-selectable backgrounds (Ground 1C) and a combination with Jobs to teach a lock screen with a live wallpaper (Ground 1D).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) (based on Advanced Bionics) is unwarranted because the specific prior art combinations asserted in the petition were never considered by the examiner during prosecution.
• Petitioner further argued that discretionary denial under §314(a) (based on Fintiv) is inappropriate. The median time to trial in the relevant district court (S.D. Cal.) is 40.2 months, which is significantly later than the statutory deadline for a Final Written Decision in the IPR. Petitioner contended that this and other Fintiv factors weigh heavily against denial, as the parallel litigation is in its early stages and a stay will be sought.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-13, 15-35, and 37-43 of the ’755 patent as unpatentable.